The Inherency Two-Step

Non-US practitioners often ask us questions about inherency.  So, let’s discuss why American patent practitioners and USPTO Examiners might frequently refer to inherency.

Inherency occurs when a prior art reference does not disclose a characteristic of a machine (or other statutory category) explicitly.  Still, the machine disclosed by the prior art necessarily has the characteristic.  MPEP 2112 IV.  In such a case, the prior art machine can anticipate (or render obvious) an Applicant’s claimed invention, even if the prior art does not recognize the characteristic.  MPEP 2112 I.

For example, the Federal Circuit found an opening in an oil can disclosed by a prior patent inherently allowed several kernels of popped popcorn to pass through at the same time.  Certainly, the oil can patent made no mention of popcorn: still, the opening in the oil can necessarily allowed popcorn to pass through.

Still, inherency seems to arise more frequently than would be expected, given its narrow application.  Why?

Basically, there are two steps to an inherency analysis (or any patentability analysis).  The first step is to determine the scope of the claim.  E.g., MPEP 2103 C.  Once the scope of the claim is understood, the relevancy of the patentability analysis typically becomes clear.

That is, when an American patent practitioner or Examiner discusses a feature as being inherent, they first are evaluating the scope of a claim.  Then, they are saying that this scope is inherent to the prior art.

So, it might be difficult for a US patent professional to effectively answer the question why a feature is inherent.  They might directly answer the question about inherency, not the implicit question about claim scope.

So, a confused, non-US patent professional should ask, “I do not understand why this claim feature is inherent.  I believe this claim means ○○.  Is that right?”  Then, the US patent professional is reminded to address the more basic question of scope, rather than the more advanced question of inherency.

If Modal PLLC can assist you in evaluating the scope of a claim, please contact us.

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